Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Birgit Clark, Merpel, Jeremy Phillips, Eleonora Rosati, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 4 March 2013

For once you can use your own name. Here's an oddity -- an "own name" defence to an action for trade mark infringement that actually succeeded. The case is a vast one, of positively Arnoldian proportions -- which is no surprise when you consider that the judge is indeed Mr Justice Arnold and the case is Stichting BDO and others v BDO Unibank, Inc and others [2013] EWHC 418 (Ch), fresh from the Chancery Division, England and Wales, today. On 26 December last, commenting on Redd v Red, the latest of a long line of failed "own name" defences to trade mark infringement, the author of this post wrote:

"The IPKat, who enjoyed reading this decision, wonders if anyone is keeping a list of trade mark infringement cases in which the defence of "I'm only using my own name", so often raised, has ever succeeded: if such a list exists, it must be a pretty short one, even if one includes passing-off actions and, in civil law jurisdictions, actions for unfair competition".

This comment was brought to the Kat's attention by a jubilant Paul Walsh (Bristows), who acted for the happy defendants. The list of cases where "I'm only using my own name" is still a short one, he believes, though he concedes that the number of cases has grown by one.

Apart from its length (it's 193 paragraphs), today's judgment in BDO has all the other hallmarks of a vintage Arnold judgment too: thorough analysis and masterly explication of underlying principles, scrupulous attention to the minutiae of the facts and the subtleties of the adversaries' arguments, a textured judgment into which European and domestic case law is woven, and not a little reference to the large and growing volume of jurisprudence that constitutes his own earlier decisions. This blog post will not focus on the decision itself (though other Kats may wish to comment on it). Rather, it seeks to draw attention to the judge's opening comments, particularly those in the second paragraph.

"The Claimants are part of an international network of accountancy and professional services firms who trade under the name "BDO" ("the BDO Network"). The First Claimant ("Stichting BDO") is the owner of Community Trade Mark No. 2,419,778 for the letter combination BDO registered in respect of a wide range of goods and services in Classes 9, 16, 35, 36, 41 and 42 ("the Trade Mark"). The First Defendant ("Unibank") is the leading bank in the Philippines. It also trades under the name "BDO". It has no trading presence in the UK, but it has tie-up arrangements with a network of third party remittance providers, including the Second to Fifth Defendants. Remittance is a service which enables foreign workers to transfer a proportion of their earnings to their family back in the home country (in this case, the Philippines). These remittance services are provided under the name BDO Remit. ...

These proceedings are part of an international dispute between the Claimants and Unibank. There are currently trade mark infringement and passing off/unfair competition claims between the parties in the Philippines, Hong Kong, California and Italy. Judgments have been handed down in the Philippines and Hong Kong. Judgment is awaited in California and the Italian action will be heard in October 2013. There are pending cancellation actions between the parties in Saudi Arabia, Oman, Taiwan, China, Japan and Singapore. There are 183 opposition actions pending in 40 jurisdictions. The situation cries out for the negotiation of a global (but perhaps geographically differentiated) co-existence agreement of the kind I discussed in Omega Engineering Inc v Omega SA [2010] EWHC 1211 (Ch), [2010] FSR 26 at [33]".

The IPKat agrees. This dispute, which almost certainly means a great deal more to the two parties than it does to the vast number of clients who use the claimant's accounting and financial services and foreign workers who remit their hard-earned pay to their loved ones and dependants back home, should be negotiated, settled, snuffed out and generally buried without the need to carry on like a couple of Budweisers in every forum which will have them. Shareholders should ask what sort of value is being added by multi-forum litigation like this and what might be a better way of spending the money that will surely disappear into the vortex of litigation expenses. Merpel agrees. If she had her way, the case management powers of judges in England and Wales would give the judge freedom to order the parties to have their silly bottoms smacked and go away to think things over.